In 2017, A.V. Ibatullin, an individual entrepreneur, filed an application with Rospatent for registration of a service mark with the word element «СЛОБОДА» /Sloboda/ in respect of services of classes 35, 36, 40, 41 and 42 of the Nice Classification. Upon review of the application, the specialists of the Patent Office decided to register the designation only for a part of the mentioned classes and services. The entrepreneur was not satisfied with such decision and filed an opposition. However, after the consideration of the opposition, Rospatent upheld the initial decision and refused to fully satisfy the claims of the applicant.
Following up, the entrepreneur filed a statement of claim with the Court for Intellectual Property Rights seeking to reverse the Rospatent decision. The Efco Cascade Coordination Center LLC was involved as a third party, represented by Zuykov and Partners trademark attorneys.
Both Rospatent and Zuykov and Partners opposed the claim. The representatives of Efco Cascade Coordination Center LLC also noted, inter alia, that Rospatent is currently considering an application filed by Efco Cascade Coordination Center LLC for the recognition of the “СЛОБОДА” /Sloboda/ trademark notorious in the Russian Federation.
The Court for Intellectual Property Rights supported the position of the Patent Office and Efco Cascade Coordination Center LLC and refused to satisfy the plaintiff’s claims. Ibatullin A. V. was not satisfied with the court’s decision and appealed in the cassation instance.
When considering the cassation appeal, the Court noted that the individual entrepreneur did not appeal against the conclusions of the court of first Instance and did not dispute the earlier priority date and the high degree of similarity of the counter trademarks with the designation of the individual entrepreneur owned by Efco Cascade Coordination Center LLC. Upon review of the cassation appeal, the court upheld the Rospatent decision and dismissed the entrepreneur complaint.